Comparison of US and EU trademark protections for non-traditional marks

¶ … U.S. VERSUS EU TRADEMARKS

IN AREAS SUCH as SMELL and SOUND

The objective of this work is to examine the United States Law and the European Union Law on trademarks specifically in the area of smell and sound and to make a comparison of the U.S. And EU trademark laws in this area of trademarks

THE EU 'COMMUNITY TRADEMARK'

The work of Bhagwan, Kulkarni, and Ramanujam (2007) entitled: "Economic Rationale for Extending Protection to Smell Marks" relates that the Community Trademark "...which covers the entire European Union, is obtained by a single registration procedure filed in by a single office and governed by a uniform law. It currently consists of countries, which include Austria, Belgium, Denmark, Finland, France, Germany, Greece, Ireland, Italy, Luxembourg, the Netherlands, Portugal, Spain, Sweden and the United Kingdom. It is administered by the Office for Harmonization of the Internal Market (OHIM) headquartered in Alicante, Spain."

Bhagwan, Kulkarni, and Ramanujam state that application for registration of a trademark will be rejected if "...he trademark cannot be graphically represented. This essentially means that the mark must be capable of being represented or described in some way on paper. Thus, for the purposes of registration, trademarks must be represented in a form that can be recorded and published..." (2007) a trademark "is a word, symbol, or other signifier used to distinguish a good or service produced by one firm from the goods and services of other firms. Accordingly Article 15(1) of the TRIPS agreement provides that any sign, or combination of signs, capable of distinguishing goods and services from those of others is eligible for trademark protection." (Bhagwan, Kulkarni, and Ramanujam, 2007)

The United States Law on trademark is stated to stem "...from a collection of laws and regulations3, accordingly the term 'trademark' includes any word, name, symbol or device or any combination thereof used by a person, or which a person has bona fide intention to use in commerce to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown." (Bhagwan, Kulkarni, and Ramanujam, 2007)

II. EU and U.S. OLFACTORY TRADEMARKS

The work of Julia Anne Matheson (2003) entitled: "The Sweet Smell of a Successful Registration" states that trademarks "offer consumers critical shorthand to identify and distinguish among the ever increasing range of available products. Ideally, a trademark acts as a guarantee of consistent quality, an indication of origin, and a valuable marketing and advertising tool capable of conveying an enormous amount of information about a product's character, price, quality, and general desirability without constant consumer re-education. A trademark's effectiveness derives from its ability to convey (first) and to evoke (subsequently) a wealth of information about a product with minimal space, time, and effort. Psychologists have repeatedly confirmed that among our senses, scent offers the strongest effects on memory, far surpassing sight or sound."

Matheson (2003) states that the Lanham Act "uses the broadest possible terms to describe the range of items that can qualify as trademarks. Although scent marks are not specifically enumerated in the Lanham Act, U.S. law recognizes that scent can function as a source identifier where it has no utilitarian function." In the absence of evidence that a scent mark has gained a meaning that is secondary, the "Trademark Manual of Examining Procedure provides that scent marks are registrable on the Principle Register under Section 2(f) or on the Supplemental Register." (Matheson, 2003)

There is a substantial amount of evidence required in establishing that a scent in actuality functions as a mark. Matheson states: "To date, the scent marks accepted for registration in the U.S. have been limited to scents commonly known and readily identifiable to the majority of the public through personal experience. The U.S. Patent and Trademark Office ("USPTO") has issued registrations for a total of five olfactory marks and has passed several additional applications to publication. In each case, the applied-for scents have consisted of a commonplace unadulterated scent immediately intelligible to the majority of the public detailed in a straightforward written description. Following the Qualitex decision (imposing the requirement of demonstrable secondary meaning), no scent mark has graduated to registration on the Principal Register." (2003)

III. REGISTRATION of OLFACTORY MARKS

Just as in the United States the European Union's Office for Harmonization for the Internal Market (OHIM) "...recognizes that the olfactory marks are eligible for trademark registration." (Matheson, 2003) However, unlike the USPTO the OHIM "has repeatedly grappled with the problem of clear graphical representation of olfactory marks even where the scent consists of a commonplace unadulterated scent capable of a straightforward written description. To date, this issue (as contrasted with the problem of proving secondary meaning) has presented the most significant barrier to registration of these marks before OHIM." (Matheson, 2003)

The Community Trade Mark Office (CTM) in 1999 "...considered whether the scent of fresh cut grass could be registered as a trademark for tennis balls. Initially, the application was refused on the ground that the words "the smell of fresh cut grass" did not qualify as an adequate graphical representation of the mark capable of depiction in a shape or form as required by Article 4 of the Community Trade Mark Regulation. On appeal, the Board of Appeal decided that the scent of fresh cut grass is a distinct scent known to, and recognizable by, the majority of the population from experience, and thus that the mark's description was appropriate for registration." (Matheson, 2003)

The meaning of 'graphical representation' was revised by the OHIM in 2001 specifically "with respect to the scent of raspberries as applied to engine fuels. The registration was initially refused on the ground that the application did not contain a graphical representation of the mark nor a precise description of it. Although OHIM ultimately upheld the refusal theorizing that the application lacked the necessary distinctiveness in relation to the goods claimed, the office found that "the smell of raspberries," like "the smell of fresh cut grass," was a sufficiently well-known and distinctive scent that the description would otherwise qualify as a sufficient graphical representation eligible for CTM protection." (Matheson, 2003) more conservative view of olfactory marks has been taken by the Advocate General for the European Court of Justice in a decision issued November 5, 2001, in which it concluded that "...olfactory marks are incapable of registration until a satisfactory means of graphic representation for such marks is found." (Matheson, 2003) This case in which this proclamation was issued was concerning an application for a fragrance "...described as "fruity balsamic with delicate hints of cinnamon" for services in classes 35, 41, and 42. The application included a chemical formula and invited readers to sample the scent at local laboratories. Similar to the requirements in the United States, the legislation governing that application provides that to be registrable, a trademark must have a distinctive character and be capable of precise graphic representation comprehensible to those consulting the register. The AG ultimately concluded that the submittal of a scent's chemical formula, a written description, a sample, or a combination of any of the foregoing could not qualify as an acceptable form of graphical representation within the meaning of the rules. As a result of the AG's decision, even commonplace unadulterated scents (such as freshly cut grass) immediately intelligible to the majority of the public and capable of depiction in the form of a straightforward written description will be denied registration." (Matheson, 2003)

IV. PROBLEMS WITH TRADEMARKING SCENTS

One of the most limiting aspects in the present protection for olfactory marks is that all marks "...regardless of type, must be capable of clear and unambiguous graphic representation to allow for accurate and effective searching and clearance by the trademark office, by third party trademark owners, and, ultimately, by the courts." (Matheson, 2003) Non-traditional marks including colors and sound marks have been developed widely as well as being widely accepted for identification systems. An accepted color code is used in referencing color marks and one example of this is the Pantone Matching System while musical sound marks are represented by musical notations. However, there has not to date been introduction of such an identification system for identifying scent marks.

Matheson reports that in the April 2001 article published in 'News in Science' it is related that a "..., computer-generated scent simulation technology is fully developed and currently available for widespread commercial application. Presuming that olfactory marks will eventually advance beyond a single unblended everyday scent, the implications of this technology for trademark identification purposes is apparent. Assuming widespread access, the olfactory clearance process could become as easy as clicking on an icon or traveling to a link to obtain a whiff of the scent covered by each mark. Alternatively, scent descriptions could be supplemented with graphical profiles or gas chronomographs of the scent created by electronic nose technology. Though the latter methods admittedly require either specialized technology or a certain level of technical skill to interpret them, the same is no less true for musical notation (i.e., the ability to read music) or color marks (access to and familiarity with the Pantone chart)." (Matheson, 2003)

There is a question regarding 'scent depletion' as noted in the work of Matheson who states: "The overall number of scents of a favorable character which are intelligible to the majority of the public through a straightforward written description and suitable for product identification are, presumably, rather limited. According to this theory, the registration and/or protection of specific scents should be prohibited to avoid depletion of the supply of scents available for use by others." (2003) This same argument is one that has been reviewed and recently dismissed by the Supreme Court "...relative to color marks as relying upon an occasional problem to justify a blanket prohibition." (Matheson, 2003)

Matheson believes that this concerns will hold more sway in the context of olfactory marks because "...Pending the adoption of a widely accepted method for the graphic representation of scent, it may be the case that the number of scents available to potential trademark owners is quite restricted. The domain name quandary has aptly demonstrated the problems generated for trademark owners where insufficient options are available to "go around." At first glance, in the scent context, it seems that the functionality doctrine should offer a method to retrieve for wider use those fragrances that have evolved over time into product features necessary for competition." (2003)

Sensory evaluation is according to Matheson "highly subjective" since the "perceptions of scent may vary widely according to the concentration, purity, quantity, age and temperature of the olfactant and the sensitivity, sophistication, skill and health of the receptor" or the customer. This subjectivity according to Matheson "explains the growing success of personalized aromatherapy. It answers how some people identify scents of vanilla, anise, apple, cranberry, oak, and pepper in a single sniff of wine and others perceive just... wine. Arguably the issue of subjectivity should present no greater quandary for olfactory marks than do trademarks generally. The legal standards used to evaluate the similarity of words or colors are no less applicable to determinations based upon gradations of scent. Only experience (and case precedent) is lacking." (Matheson, 2003)

There is also a problem noted by Matheson in relation to functionality in applying trademarks to scents and specifically since scents "...which are neither an "inherent attribute" nor a "natural characteristic" of a product and serve no utilitarian function other than as a source identifier are protectable as trademarks. While determinations of functionality may appear straightforward in evaluating products like perfume, home fragrance products, and household cleaners, these lines of demarcation are quick to blur." (2003) Matheson questions the application of fragrances to items such as paper towels and toilet papers and asks whether these fragrances would fall in terms of trademarks. Also, would this increase prices quite liberally?

The work of Carsten Schaal (2003) entitled: "The Registration of Smell Trademarks in Europe: Another EU Harmonization Challenge" states that the "first step to harmonization of the EU Marketing concerning trade marks was laid down on December 21st, 1998 with the First Council Directive 89/104/EEC to approximate the laws of the Member States relating to trade marks. Another step was the Community Trade Marks Regulation (CTMR) EC/40/94 of December 20th 1993, which declared under its Art. 2 the establishment of the 'Office for Harmonisation in the Internal Market' (OHIM) for trade marks and designs. Accordingly, the Member States implemented the Directive 89/104 EEC into their national laws, e.g. The United Kingdom (UK) in the Trade Marks Act 1994 and Germany in the 'Markengesetz' (MarkenG) of 1995." (Schaal, 2003) the Directive, the Regulation and the amended State Laws, took into consideration "...took into consideration the new trade mark forms such as sounds, signs and smells..." however, there is a major problem which "...endures" and that is "...the requirement of 'graphical representation' of the mark, which can be found in each one of those statutes." (Schaal, 2003)

Schaal examines the requirement of graphical representation and states that ultimately, the registration of an olfactory trade mark has been only rarely successful. Schaal (2003) states that the requirement of a 'graphical representation' of a trademark in order that it be registered was "...first mentioned in Art. 2 of the 89/104/EEC Directive, which reads as follows: "A trade mark consists of any sign capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings." (Schaal, 2003) Schaal states that there are practical reasons for the requirement that the trademark be recorded only "by means of a piece of paper that is visible and can be read by everybody.

The Third Board of Appeal is stated by Schaal (2003) to have summarized "in the Orange case that the graphical representation was "an imperative necessity for conducting the examination and registration procedure, including the search, and is commanded by the interests of the public and all owners of registered rights such as, for example, the owners of earlier trade mark rights who wish to determine the scope of protection of the application, and, finally, with regard to possible opposition proceedings," (Schaal, 2003)

Schaal (2003) also relates that another reason for this requirement of a graphical representation as well as for the need for a depiction on paper "...is the facilitation of the Register Office's administration." Schaal (2003) states that such an institution "....like that with many thousands (2003)

V. SUCCESSFUL OLFACTORY TRADE MARK REGISTRATIONS in the EU

Schaal (2003) relates that applications on olfactory trademarks in European register offices including "...the UK Register Office, the Uniform Benelux Register Office, the German Patent- und Markenamt or the OHIM" have resulted in only a few successful olfactory trademarks thus far. Stated as the first remarkable case was that of Chanel, a well-known manufacturer of perfume in which the company seeking to register "...the fragrance of 'Chanel No 5' as an olfactory trade mark in 1994. scent of aldehydic-floral fragrance product, with an aldehydic top note from aldehydes, bergamont, lemon and neroli; an elegant floral middle note, from jasmine, rose, lily of the valley, orris and ylang-ylang; and a sensual feminine note from sandal, cedar, vanilla, amber, civet and musk. The scent is also being known by the written brand name No 5." The Chanel application failed because of the above said second requirement that the shape of the product shall not result from the nature of the good itself. However, the smell of a perfume is the good itself and can therefore never be successfully registered as an olfactory trade mark." (Schaal, 2003) This, states Schaal (2003) "is the current state of the laws..."

Two successes in registering olfactory trademarks in the EU were those of: (1) Sumitomo Rubber Co.; and (2) Unicorn products. Sumitomo Rubber Co. applied to register a "floral fragrance/smell reminiscent of roses as applied to tyres." (Schaal, 2003) This was a successful registration and was the first olfactory trade mark registration in the UK registered under number GB2001416. The second also registered the same day was that of Unicorn Products seeking to register "a mark in class 28 in respect of the 'strong smell of bitter beer applied to flights for darts. This olfactory trademark was recorded by the UK Register Office under number GB2000234." (Schaal, 2003)

VI. NON-TRADITIONAL TRADEMARKS

The work of Neetri Suri (2008) entitled: "Single Colour Mark: It's Registrability in the United States and the United Kingdom" states that the non-traditional trademark, also known as a non-conventional trademark "is any type of trademark which does not belong to a pre-existing conventional category of trademarks, and which is often difficult to register, but which may nevertheless fulfill the essential trademark function of uniquely identifying the commercial origin or products or services." Suri writes that the concept of non-traditional trademarks is "an innovative concept as it introduces an entirely new family of marks discrete and distinct from the traditional trademarks." (2008) trademark is normally comprised of a "device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or any combination thereof and a general perception about it is that is static, two-dimensional word, design or logo used to identify a product or service. But this family of non-traditional trademarks on the contrary comprises of a number of different types of trade marks which do not belong to the conventional category, of words, numerals, pictorial and logo marks, or any combination of these marks, and yet serve the essential purpose of a trade mark by identifying the products or services as being from a particular undertaking. Non-conventional trademarks may therefore be visible signs (eg. colours, shapes, moving images, holograms), or non-visible signs (eg. sounds, scents, tastes)." (Suri, 2008) Suri (2008) states that as such "...non-traditional trademarks comprise of marks based upon sound, texture, three-dimensional shape, taste and smell and following members comprise it:

1. Colour marks

2. Sound marks

3. Smell/Scent/Olfactory marks

4. Shape marks

5. Moving Image marks

6. Holograms

7. Gesture marks

8. Taste marks/Gustatory marks

9. Feel marks/tactile marks

10. Celebrity marks

11. Digital marks

12. Trade Dress (Suri, 2008)